The Complainant is DaimlerChrysler,
a corporation organized and existing under the laws of Germany, having its principal
place of business Stuttgart, Germany.

The Respondent is Donald
Drummonds, an individual with an address at 4175 Ruby Forest Boulevard, Suwanee,
Georgia, United States of America.

2. The Domain Name and
Registrar

The domain name at issue
is <mercedesshop.com>, which domain name is registered with Network Solutions,
Inc., located in Herndon, Virginia, United States of America ("NSI").

3. Procedural History

3.1 A Complaint was
submitted electronically to the WIPO Center on January 29, 2001, and the signed
original together with four copies forwarded by express courier was received
on January 31, 2001. An Acknowledgment of Receipt was sent by the WIPO Center
to the Complainant, dated February 1, 2001.

3.2 On February 7, 2001,
a Request for Registrar Verification was transmitted to the registrar, Network
Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at
issue is registered with NSI; (2) confirm that the person identified as the
Respondent is the current registrant of the domain name; (3) provide the full
contact details (i.e., postal address(es), telephone number(s), facsimile number(s),
e-mail address(es)) available in the registrarís Whois database for the registrant
of the disputed domain name, the technical contact, the administrative contact
and the billing contact; (4) confirm that the Uniform Domain Name Dispute
Resolution Policy (the "Policy") is in effect; (5) indicate the current status
of the domain name.

3.3 On February 8, 2001,
NSI confirmed by reply e-mail that the domain name at issue is registered with
NSI, is currently in active status, and that the Respondent is the current registrant
of the name. The registrar also forwarded the requested Whois details, and confirmed
that the Policy is in effect.

3.4 The WIPO Center
determined that the Complaint satisfies the formal requirements of the Policy,
the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules")
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the "Supplemental Rules"). The Panel has independently determined and agrees
with the assessment of the WIPO Center that the Complaint is in formal compliance
with the requirements of the Uniform Domain Name Dispute Resolution Policy,
adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")
on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental
Rules. The required fees for a single-member Panel were paid on time and in
the required amount by the Complainant.

3.5 No formal deficiencies
having been recorded, on February 13, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement Notification")
was transmitted to the Respondent (with copies to the Complainant, NSI, and
ICANN), setting a deadline of March 4, 2001, by which the Respondent could file
a Response to the Complaint. The Commencement Notification was transmitted to
the Respondent by courier and by e-mail to the e-mail addresses indicated in
the Complaint. In any event, evidence of proper notice is provided by the evidence
in the record of the Respondentís participation in these proceedings.

3.6 A Response was received
electronically on March 2, 2001, and in hardcopy on March 6, 2001. The Respondent
requested a three-member Panel and the required fees for this Panel were paid
on time and in the required amount by Respondent. An Acknowledgment of Receipt
(Response) was sent by the WIPO Center on March 7, 2001.

3.7 On March 7, 2001,
the Complainant's Request For Permission to File a Reply, alleging new facts
and new legal developments, was received by the WIPO Center in electronic format,
and on March 12, 2001, the hardcopy of the request was received. On March 8,
2001, Respondent's Objection to Complainant's Request was received by the WIPO
Center in electronic format, and on March 15, 2001, the hardcopy of the objection
was received.

3.8 On March 23, 2001,
the WIPO Center Sent a Notification of Panel Appointment, appointing Richard
W. Page, Esq. and Professor Milton L. Mueller, each of whom had previously submitted
a Statement of Acceptance and Declaration of Impartiality and Independence.

3.9 On January 29, 2001,
having received a Statement of Acceptance and Declaration of Impartiality and
Independence, the WIPO Center notified the parties that M. Scott Donahey had
been appointed as Presiding Panelist and that Panelist Selection was now complete.

3.10 On May 15 2001,
the parties were advised of the request by the Panel for additional submissions
as follows: "Pursuant to Uniform Rules, Rule 12, the Panel requests further
statements from the Complainant and Respondent. Complainant's statement should
be entitled Complainant's Brief Re New Matter and should be filed no later than
May 21, 2001. Complainant's submission should be limited to addressing the recent
decision in TCPIP Holding Company, Inc. v. Haar Communications, Inc., 2001 WL
197939 (2d Cir. Feb. 28, 2001) and new factual developments related to changes
made to Respondent's web site. Respondent may submit a response to Complainant's
Brief Re New Matter no later than May 28, 2001. The Panel will issue its ruling
no later than June 11, 2001.

3.11 The Complainant
and the Respondent each submitted the requested additional statements by the
deadlines indicated.

4. Factual Background

4.1 Complainant holds
registrations for the MERCEDES trademark, the earliest of which dates back to
1909. Complaint, Annex C.

4.2 Complainant has
used the mark in connection with various motor vehicles, and parts therefor,
devices and mechanisms for internal combustion engines, tools, filter elements,
speedometers, gauges, pistons, and various other parts and accessories.

4.3 Complainant promotes
its products and marks through a wide range of media, including on the World
Wide Web, in the United States and throughout the world. Complainant has spent
many millions of dollars in this promotional effort. Complainant has during
the last few years sold more than one million motor vehicles annually. There
is no doubt that Complainant has created a significant brand awareness and that
its mark is a famous mark.

4.4 Complainant has
registered the domain names <mercedes.com> and <mercedes-benz.com>
which resolve to web sites maintained by the Complainant.

4.5 Respondent registered
the domain name at issue on February 14, 1999.

4.6 Respondent maintains
a web site on which appears a discussion forum where mechanics and owners of
Complainant's products discuss the care, maintenance and performance of those
products. Respondent also offers genuine Mercedes parts and accessories for
sale, which parts and accessories were obtained through fully authorized channels
of distribution. Respondent also offers clearly identified quality, re-built,
and used parts.

4.7 Respondent does
use the trademarked Mercedes-Benz design logo, although not as prominently as
in the past versions of the web site attached to the Complaint. Complaint, Annexes
F and G. The site also contains photographs of Complainant's products and uses
the trademarked numerical identification of Complainant's vehicles.

4.8 Respondent's web
site has the following disclaimer at the bottom of the home page: "MercedesShop
recognizes that "Mercedes", "Mercedes-Benz", the three pointed star and various
model numbers are registered trademarks of DaimlerChrysler. These terms are
used for identification purposes only. MercedesShop is not affiliated in any
way with Daimler Chrysler."

4.9 The site includes
a feature for the exchange of information between owners, admirers and mechanics
of Complainant's vehicles, and the site has 3000 free members, including employees
of authorized Mercedes-Benz dealerships who engage in such discussion and exchange.
Although this was initially the only feature of the site, the site was later
expanded to include the offering for sale of parts and accessories, including
the authorized service manual CD-ROMs published by Complainant, the latter being
the best-selling item on the site.

5. Partiesí Contentions

5.1 Complainant contends
that Respondent has registered as a domain name a mark which is identical and/or
confusingly similar to the trademarks registered and used by Complainant, that
Respondent has no rights or legitimate interests in respect of the domain name
at issue, and that Respondent has registered and is using the domain name at
issue in bad faith, because the attachment of the word "shop" to the MERCEDES
mark suggests that the site is operated by an authorized representative of Complainant.

5.2 Respondent contends
that he is merely identifying the subject matter of the site, that there is
no likelihood of confusion since there is a disclaimer, and since users who
would intuitively seek the web site of Complainant would enter <mercedes.com>
or <mercedes-benz.com> and would in fact be taken to Complainant's web
site. Respondent further contends that he has rights and legitimate interests
in respect of the domain names at issue, since he established the site shortly
after registration in February 1999, that it has been used to facilitate owners
and mechanics of Complainant's motor vehicles to exchange ideas and experiences,
which service is provided free of charge, and that in certain respects it is
analogous to a "fan site" for aficionados of Complainant's motor vehicles. Finally,
Respondent contends that it did not register and is not using the domain name
at issue in bad faith. The name was originally registered with the intent to
use and indeed was used for some period as a non-commercial information site.
Moreover in the more than two years that the web site has been operational,
Respondent never received a complaint from Complainant. Respondent has been
engaged commercially in the sale of parts and accessories exclusively related
to Complainant's motor vehicles.

6. Discussion and Findings

Paragraph 15(a) of the
Rules instructs the Panel as to the principles the Panel is to use in determining
the dispute: "A Panel shall decide a complaint on the basis of the statements
and documents submitted in accordance with the Policy, these Rules, and any
rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy
directs that the Complainant must prove each of the following:

(1) that the domain
name registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and,

(2) that the Respondent
has no legitimate interests in respect of the domain name; and,

(3) that the domain
name has been registered and is being used in bad faith.

We must first determine
whether the domain name at issue is identical or confusingly similar to a mark
in which Complainant has rights. Respondent has affixed the word "shop" to Complainant's
MERCEDES trademark and registered it in the .com gTLD. The addition of
such words to a recognized mark has been held to create a confusingly similarity
between the domain name and the mark of the Complainant. See, e.g., Gorstew
Limited, Jamaica, and Unique Vacations v. Shop A-Z.com, Inc., ICANN Case
No. FA94941 ("shop" added to mark SANDALS in <shopsandals.com> and <shop-sandals.com>);
Unites States Olympic Committee v. MIC, ICANN Case
No. D2000-0189 ("store" added to mark OLYMPIC in <usolympicstore.com>);
Seiko Epson Corporation and Epson America, Inc. v. Distribution Purchasing
& Logistics Corp, ICANN Case No. FA94129 ("store," added to EPSON mark
in <epsonstore.com>). We find that Respondent's domain name is confusingly
similar to Complainant's mark.

In determining whether
the Respondent has rights or legitimate interests in respect of the domain name
at issue, the Panel turns to paragraph 4(c) of the Policy. 4(c)(i) appears to
be the only paragraph that might be applicable to the present situation. That
subparagraph provides that a respondent can establish rights or legitimate interests
in respect of a domain name if it can show "before any notice to [the respondent]
of the dispute, [the respondent has used], or demonstrably prepar[ed] to use,
the domain name . . . in connection with a bona fide offering of goods or services."

It is undeniable that Respondent
was aware of Complainant's famous mark prior to the registration of the domain
name at issue and the establishment of Respondent's web site. But the majority
does not believe this fact alone to be determinative on the issue. Respondent
is serving as a clearinghouse for information concerning Complainant's vehicles
and is selling parts and accessories exclusively for Complainant's vehicles.
The domain name and the name of Respondent's web site "MercedesShop" is descriptive
of the business conducted there. In conducting the business that Respondent
is conducting, "it would be difficult, if not impossible for [Respondent] to
avoid altogether the use of the word 'Mercedes . . .which [is] the normal term[]
which, to the public at large, signify [Complainant's] cars." Volkswagenwerk
Aktiengesellschaft v. Church, 4111 F.2d 350 (9th Cir. 1969).
Respondent's site contains a clear disclaimer, which states that it is displaying
trademarks that belong to Complainant and that Respondent is in no way affiliated
with Complainant. Moreover, Respondent operated the web site for more than two
years without receiving any notice of dispute from Complainant. Accordingly,
the majority finds that Complainant has failed to prove that Respondent has
no rights or legitimate interests in respect of the domain name at issue.

While it is not necessary
to reach the issue of bad faith, and while the majority is loathe to address
issues it is unnecessary to resolve in order to issue its decision, in this
case the majority feels it is important to address the bad faith issue. The
majority particularly addresses paragraph 4(b)(iv), which is the only provision
that seems closely on point. That subparagraph would establish bad faith where
a Respondent has used the domain name to intentionally attempt to attract, for
commercial gain, Internet users to a web site by creating a likelihood of confusion
with the complainant's mark as to the source, sponsorship, affiliation, or endorsement
of the web site or of a product or service available at the web site.

Despite Respondent's protestation
that the web site was initially established as a non-commercial, informational
site, Respondent cannot and does not deny that it is currently being operated
for commercial gain. However, the majority does not find that Respondent is
attracting users to the site by creating a likelihood of confusion, nor are
such users likely to believe they are dealing with an authorized agent of Complainant
or that Complainant sponsors the site. A user searching for Complainant's Mercedes-Benz
division would surely first enter either <mercedes-benz.com> or <mercedes.com>.
Upon doing so, the user would be taken to Complainant's web site. It is exceedingly
unlikely that any user seeking to find Complainant would enter <mercedesshop.com>.
Moreover, there is a clear disclaimer at Respondent's web site of any affiliation
between Complainant and Respondent. In cases where a respondent has been engaged
in the exclusive sales of a complainant's goods or services and has disclaimed
any relationship with the respondent, Panel decisions have not found that the
respondent acted in bad faith. See, Caterpillar Inc. v. Off Road Equipment
Parts, ICANN Case No. FA95497; America Online, Inc. v. Vadim Eremeev,
ICANN Case No. D2001-0003.

Under the present facts,
if the Panel were to find for the Complainant, the majority can conceive of
no case in which a legitimate competitor in the sale of parts and aftermarket
accessories could ever register a domain name descriptive of that business.
The Policy was designed to deal only with the limited problem of cybersquatting.
It was not designed to establish for the holder of a strong trademark a bar
to entry of online competitors.

The majority also notes
that the Policy was not designed to deal with, nor is the Panel asked to determine,
the issue of trademark infringement. Whether the use of Complainant's trademark
on Respondent's web site constitutes trademark infringement is not for the Panel
to decide. If Complainant wishes to pursue that issue, other forums are available.

7. Decision

For all of the foregoing
reasons, the majority decides that the domain name registered by Respondent
is confusingly similar to the mark in which the Complainant has rights, but
that the Complainant has failed to prove that Respondent has no rights to or
legitimate interests in respect of the domain name at issue, or that the domain
name was registered and is being used in bad faith. Accordingly, the relief
requested in the Complaint is denied.

M. Scott
DonaheyPresiding Panelist

Milton L.
Mueller
Panelist

Dated: June
18, 2001

DISSENT

I respectfully disagree
with my co-Panelists and would find that Respondent should be required to transfer
the domain name <mercedesshop.com> (the "Domain Name") to Complainant.

Identity or Confusing
Similarity.

I would expand the findings
that the Domain Name is confusingly similar to the MERCEDES trademark pursuant
to the Policy paragraph 4(a)(i) as follows:

In addition, Courts have
recognized that consumers expect to find a company on the Internet at a domain
name address comprised of the companyís name or trademark. See Panavision
Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer
who is unsure about a companyís domain name will often guess that the domain
name is also the companyís name . . . . [A] domain name mirroring a corporate
name may be a valuable corporate asset, as it facilitates communication with
a customer base." (citations omitted)).

The Domain Name <mercedesshop.com>
suggests an association or relationship to Complainant, which does not exist
and, if used by parties other than Complainant, will cause confusion in the
marketplace. See Nike, Inc., WIPO Case
No. D2000-0167, id.

Therefore, I agree with
my co-panelists that the Domain Name is confusingly similar to the MERCEDES
trademark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate
Interest.

I would find that Respondentís
use of the Domain Name does not constitute fair use or the bona fide offering
of goods and services, and thus does not satisfy the criteria of paragraph 4(c)(i).

The use of a disclaimer
by Respondents is not sufficient to dispel the likelihood of initial interest
confusion by an Internet user. The Respondentís Domain Name uses the MERCEDES
trademark in the title of the Domain Name which resolves to Respondentís website.
Thus the Internet user searching for information regarding Complaintís products
is drawn to Respondentsí website through initial interest confusion as to the
source, sponsorship, affiliation, or endorsement. Even though a misdirected
user may become aware that the Domain Name does not resolve to a website affiliated
with the Complainant, the fact remains that the Respondent's improper and unauthorized
use of the trademark diverts persons seeking Complainantís events. This initial
interest confusion violates the DaimlerChryslerís rights in its trademark. See,
Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion
and noting that "Web surfers are more likely to be confused as to the ownership
of a web site than traditional patrons of a brick-and-mortar store would be
of a store's ownership," and that even where people realize, immediately upon
accessing the complained-of website, that they have reached a site operated
by someone other than the trademark owner, the infringing website will still
have gained a customer by appropriating the goodwill of the trademark owner).

Given the initial interest
confusion created by Respondentís use of Complainantís trademark, I would find
that Respondentís use of the Domain Name does not constitute fair use or the
bona fide offering of goods and services, and thus does not satisfy the criteria
of paragraph 4(c)(i). Therefore, I would find that Respondent has no rights
or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Respondent admits that
it is intentionally attracting Internet users to its website for the purpose
of commercial gain through the sale of products relating to Mercedes automobiles.
I would find above that the Domain Name creates the likelihood of initial user
confusion as to the source, sponsorship, affiliation or endorsement of DaimlerChrysler.
Therefore, the criteria of the Policy paragraph 4(b)(iv) are met andRespondent
has registered and used the Domain Name in bad faith in violation of the Policy
paragraph 4(a)(iii).

Decision

The majority expresses
a concern that "Under the present facts, if the Panel were to find for
the Complainant, the majority can conceive of no case in which a legitimate
competitor in the sale of parts and aftermarket accessories could ever register
a domain name descriptive of that business." The legitimate competitor
need only register a more generic domain name such as <germanauto.com>,
then disclaim any affiliation to a specific manufacturer on its website. The
disadvantage to this approach is that the competitor cannot trade on the registered
MERCEDES trademark.

I am concerned that by
ruling for Respondent no trademark holder can protect itself against the illegitimate
competitor who would feign fair use, then convert its website to a commercial
venture.

I would conclude (a) that
the Domain Name is confusingly similar to Complainantís registered MERCEDES
trademark, (b) that Respondent does not have rights or legitimate interest in
the Domain Name and (c) that Respondent did register and use the Domain Name
in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of
the Rules, I would order that all of the Domain Name be transferred to DaimlerChrysler.